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Saturday, November 12, 2016

Since the Federal Circuit's formation in 1982, Rochelle Dreyfuss has witnessed patent law go through some significant changes, and the climate for university research and biotechnology innovation today is markedly different from what it was thirty years ago. However, Dreyfuss stated at the beginning of remarks she gave at Akron Law on Friday November 4, "sometimes facts change; but one's views on a subject do not." Patent law's common law "experimental use" defense–or lack thereof–is, she believes, a case in point. When she wrote on this topic over ten years ago in her paper Protecting the Public Domain of Science: Has the Time for an Experimental Use Defense Arrived?, she felt largely the same as she does now: universities need the benefit of "some version of an invigorated experimental use defense." In her new paper, "Reconsidering Experimental Use," to be published in the Akron Law Review this spring., Dreyfuss returns to the important question of whether, and to what extent, patented inventions can be used for experimental purposes during the term of a patent. Read more at the jump.

Wednesday, November 2, 2016

Guest post by Greg Reilly (IIT Chicago-Kent College of Law), whose work on patent "forum selling" and patent discovery has previously been featured on this blog.
Conventional wisdom is that patent prosecutors should obtain the broadest possible claim scope or, more precisely, should obtain at least one claim that is as broad as the U.S. Patent and Trademark Office examiner will allow while also hedging with other, narrower claims. A new paper by Oskar Liivak (Cornell), Overclaiming Is Criminal, provocatively argues that this standard practice is not just sub-optimal or improper, but is in fact illegal under federal law – “it is a felony to willfully overclaim in a patent application.” Liivak’s paper is a crucial contribution to the debate over improving patent quality, highlighting the need to alter the patent applicant’s and patent prosecutor’s incentives, not just attempt to improve the Patent Office’s performance.

Liivak’s legal argument is virtually air-tight, and I am sympathetic to his policy concerns, though the practical impact of his proposal is less certain because of the difficulty of identifying “willful overclaiming.” In any event, criminal sanctions are not the only way to alter the incentives of applicants and prosecutors to ensure that they internalize costs from overclaiming. Another possibility is restricting claim amendments in Patent Office post-issuance proceedings, an issue currently before the en banc Federal Circuit in In re Aqua Products, Inc. (More after the jump.)